If an amendment to allege use has been submitted and accepted, the intent-to-use application is processed as a use application. If the examining attorney determines that the mark is entitled to registration, the examining attorney will approve the mark for publication and the mark will be published for opposition. If the application is not successfully opposed, the mark will register and the USPTO will issue a certificate of registration. 15 U.S.C. §1063(b)(1); 37 C.F.R. §2.81(a).
If no amendment to allege use has been accepted for an intent-to-use application, and the examining attorney determines that the mark is entitled to registration but for the submission of an allegation of use, the examining attorney will approve the mark for publication and the mark will be published for opposition. If the application is not successfully opposed, the USPTO will issue a notice of allowance. 15 U.S.C. §1063(b)(2); 37 C.F.R. §2.81(b).
Section 13(b)(2) of the Trademark Act, 15 U.S.C. §1063(b)(2), provides for issuance of a notice of allowance if a §1(b) application is published for opposition and is not successfully opposed. The notice of allowance in an intent-to-use application will issue about eight weeks after the date the mark was published. The USPTO does not publish any notification in the Trademark Official Gazette that a notice of allowance has been issued. The notice of allowance is a key document because its issue date establishes the due date for filing a statement of use. See 37 C.F.R. §2.88(a)(1).
The accuracy of the information stated on the notice of allowance is important. If there are any errors in the notice of allowance, or if the applicant believes that the notice of allowance issued in error (e.g., because an amendment to allege use was previously approved by the USPTO or the filing basis of the application should not be designated as intent-to-use under §1(b)), the applicant should notify the ITU/Divisional Unit immediately by telephone. See TMEP §1106.04. Current telephone numbers are posted on the USPTO website at https://www.uspto.gov.
If an applicant asserts other bases for registration in addition to §1(b), the USPTO will publish the mark for opposition and will issue a notice of allowance if there is no successful opposition. The identification of goods, services, or nature of the collective membership organization specified for all the bases will remain in the application pending the filing and approval of a statement of use for the goods/services/collective membership organization based on §1(b), unless the applicant files a request to divide, a request to delete the §1(b) goods/services/collective membership organization, or a request to delete the §1(b) basis when there is an additional basis for registration. See TMEP §806.04(a) regarding the deletion of a §1(b) basis after issuance of a notice of allowance, §1107 regarding amendments after notice of allowance, and §§1110–1110.11(a) regarding requests to divide.
If the applicant fails to timely file a statement of use or a request for an extension of time to file a statement of use in response to a notice of allowance, the entire application will be abandoned unless, before the expiration of the deadline for filing the statement of use, the applicant files a request to divide, a request to delete the §1(b) goods/services/collective membership organization, or a request to delete the §1(b) basis when there is an additional basis for registration. 37 C.F.R. §2.88(a), (k); TMEP §806.02(d). For example, if all the goods/services are based on both §44(e) and §1(b), the failure to file a timely statement of use or extension request will result in the abandonment of the entire application. In such case, the applicant may file a petition to revive if the delay in filing the statement of use, extension request, or request to delete the §1(b) basis was unintentional. See TMEP §§1714, 1714.01, 1714.01(b)–(g).
If, after issuance of the notice of allowance but before submission of the statement of use, the USPTO determines that a clear error ( see TMEP §706.01) was made in approving the mark for publication, the USPTO will cancel the notice of allowance and return the application to examination. The examining attorney will issue an appropriate Office action that includes the relevant requirement or refusal and informs the applicant of the cancellation of the notice of allowance. See TMEP §1106.03 regarding cancellation of the notice of allowance.
After the notice of allowance issues, the examining attorney has jurisdiction to act in the case. 37 C.F.R. §2.84(a). Therefore, the examining attorney does not have to request jurisdiction to take an action, as would be required after publication but before the notice of allowance issues. See id. However, after a notice of allowance issues, the examining attorney should not make a refusal or requirement that could or should have been made during initial examination of the application unless the initial failure to make the refusal or requirement was a clear error. If the examining attorney determines that he or she must make a refusal or requirement after issuance of the notice of allowance that could or should have been made during initial examination, the examining attorney must consult with his/her managing attorney or senior attorney before taking the action. This must be done whether the action is to be taken before, during, or after examination of the statement of use, and regardless of whether the notice of allowance is cancelled. This applies to any refusal that arguably could or should have been made during initial examination, such as most refusals under §2(d) or §2(e)(1) of the Act.
Neither the Trademark Act nor the Trademark Rules of Practice restrict the USPTO from issuing a new requirement or new refusal at any time prior to registration. The USPTO has a duty to issue valid registrations and has broad authority to correct errors made by examining attorneys and other USPTO employees. See Last Best Beef LLC v. Dudas, 506 F.3d 333, 340, 84 USPQ2d 1699, 1704 (4th Cir. 2007) ("[F]ederal agencies, including the USPTO, have broad authority to correct their prior errors."); see also BlackLight Power Inc. v. Rogan, 295 F.3d 1269, 63 USPQ2d 1534 (Fed. Cir. 2002) (concluding that USPTO officials acted within their authority to withdraw a patent from issuance in order to fulfill the USPTO’s mission to issue valid patents, even after issuance of a Notice of Allowance, payment of the issue fee and notification of the issue date, and with publication of the drawing and claim in the Trademark Official Gazette).
Thus, if the USPTO discovers that a mistake was made during initial examination that would result in issuance of a registration in violation of the Trademark Act or applicable rules, the USPTO must issue any necessary requirements or refusals, even if they could or should have been raised during initial examination.
See TMEP §1109.08 regarding the issuance of refusals and requirements during examination of a statement of use.
If the USPTO cancels the notice of allowance before the filing or examination of the statement of use, the USPTO will refund any fees paid in conjunction with a statement of use or request(s) for extension(s) of time to file a statement of use, except where: (1) the applicant files a request to delete the §1(b) basis from a multiple-basis application (see TMEP §806.04(a)); or (2) the notice of allowance is cancelled as a result of an amendment to the filing basis after publication, pursuant to a petition to the Director (see TMEP §806.03(j)(ii)).
Cancellation of the notice of allowance is done by the ITU/Divisional Unit of the USPTO. To request that a notice of allowance be cancelled, a USPTO employee must send an email request to the ITU/Divisional Unit’s internal mailbox with a clear statement of the reason why the notice of allowance is being cancelled. The ITU staff will enter an appropriate Note to the File in the record, stating who requested the cancellation and why. When the notice of allowance is cancelled, the examining attorney must inform the applicant that this has been done.
When the notice of allowance is cancelled and reexamination is required, the application is returned to the examining attorney. The examining attorney does not have to request jurisdiction to issue an Office action. If an Office action issues and the applicant subsequently overcomes all refusals and complies with any requirements made in the Office action, the examining attorney must approve the mark for republication.
If the application is returned to initial examination, any statement of use previously submitted will remain in the record but will not be examined unless it is resubmitted with the required fee as an amendment to allege use or statement of use at the appropriate time.
If the applicant files a statement of use or request for an extension of time to file a statement of use after the notice of allowance has been cancelled, the ITU/Divisional Unit will inform the applicant in writing that the statement of use or extension request is untimely, and will refund the filing fee.
When the applicant receives a notice of allowance, the applicant should check the accuracy of the information. If there are any errors in the notice of allowance, the applicant should notify the ITU/Divisional Unit of the USPTO immediately by telephone. Current telephone numbers are posted on the USPTO website at https://www.uspto.gov.
Correction of USPTO Error
If an error in the notice of allowance was the result of a USPTO error (e.g., entering data incorrectly or failing to enter a timely filed amendment), the USPTO will determine whether the change requires republication. If necessary, the ITU staff will contact the examining attorney by email to approve the change and determine whether republication is required.
If the change may be made without republication, the ITU staff will make the correction and issue a corrected notice of allowance. The USPTO will not issue a new notice of allowance or otherwise change the time for filing a statement of use.
If republication is required, and no action by the examining attorney that requires a response is necessary, the ITU staff will make the correction, cancel the notice of allowance, and refund any fees paid for filing a statement of use or request(s) for extension of time to file a statement of use. The application will then be scheduled for republication. If the application is not successfully opposed, the USPTO will issue a new notice of allowance.
If the examining attorney must issue an Office action that requires a response as a result of the requested correction, the ITU staff will cancel the notice of allowance, refund any fees paid for filing a statement of use or request(s) for extension of time to file a statement of use, and forward the application to the examining attorney for further action.
Correction of Applicant’s Error
If an error in the notice of allowance is the result of an applicant’s error (e.g., providing incorrect information in the application or in an amendment to the application), the applicant must file a written amendment using the TEAS Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment form, which will be processed like any other amendment filed after issuance of the notice of allowance and before filing of the statement of use. See TMEP §1107.
Generally, the only amendments that may be entered in an application between the issuance of the notice of allowance and the submission of a statement of use are: (1) the deletion of specified goods or services, or the entire description of the nature of the collective membership organization, from the identification; (2) the deletion of a basis in a multiple-basis application; and (3) changes of attorney and changes of address. See 37 C.F.R. §2.77(a).
The "deletion of specified goods or services, or the entire description of the nature of the collective membership organization," within the meaning of 37 C.F.R. §2.77(a)(1), means the elimination of an existing entry in an identification in its entirety. Deletion is distinct from other types of amendments to modify or limit an identification, such as amendments to limit the goods/services as to types, channels of trade or classes of purchasers, or to restrict an existing item in scope by the introduction of some qualifying language, or the substitution of specific terms for more general terms.
Although 37 C.F.R. §2.77(a)(2) permits the deletion of a basis in a multiple-basis application after issuance of the notice of allowance, an applicant cannot delete a §1(b) basis if the only other basis is §44(d). Section 44(d) of the Trademark Act provides only a basis for receipt of a priority filing date, not a basis for publication or registration. See TMEP §1003.03. In such situations, the applicant may request deletion of the §1(b) basis only by filing a petition to allow consideration of an amendment to a §44(e) filing basis. 37 C.F.R. §2.35(b)(2). The request must be filed using the TEAS Petition to Change the Filing Basis After Publication form, unless a paper submission is permitted (see TMEP §301.02). See TMEP §806.03(j)(ii).
The USPTO will enter other amendments during this period only with the express permission of the Director, after consideration on petition under 37 C.F.R. §2.146. If the Director determines that the amendment requires review by the examining attorney, the petition will be denied and the amendment may be resubmitted with the statement of use in order for the applicant to preserve its right to review. 37 C.F.R. §2.77(b); TMEP §1107.01. The petition must be accompanied by the fee required by 37 C.F.R. §2.6. See TMEP Chapter 1700 regarding petitions.
The filing of an amendment after issuance of the notice of allowance does not extend the deadline for filing a statement of use or request for an extension of time to file a statement of use.
See TMEP §1106.04 regarding correction of errors in a notice of allowance, §806.04(a) regarding the deletion of a §1(b) basis after issuance of a notice of allowance, and §806.03(j)(ii) regarding amendments to add or substitute a basis between issuance of the notice of allowance and filing the statement of use.
As noted in TMEP §1107, an applicant may file a petition to the Director under 37 C.F.R. §2.146 to permit an amendment to be entered (other than an amendment deleting a basis or deleting specified goods/services) during the period between the issuance of a notice of allowance and the filing of a statement of use. If the Director determines that the amendment requires review by the examining attorney, the petition will be denied and the amendment may be resubmitted with the statement of use in order for the applicant to preserve its right to review. 37 C.F.R. §2.77(b).
The granting of a petition to enter an amendment between issuance of the notice of allowance and filing of the statement of use does not extend the deadline for filing a statement of use or request for an extension of time to file a statement of use. Regardless of whether an applicant has received a response to a proposed amendment, the applicant must file its extension request or statement of use when it becomes due. The extension request or statement of use may refer to the proposed amendment.
Section 1(d) of the Trademark Act, 15 U.S.C. §1051(d), requires that a statement of use be filed within six months after the issuance of the notice of allowance, or before the expiration of a previously granted extension of time to file a statement of use. 37 C.F.R. §2.88(a)(1). If the mark is not in use in commerce before the expiration of the six-month period following the issuance of the notice of allowance, the applicant must file a request for an extension of time to file a statement of use within the six-month period to avoid abandonment of the application. See 15 U.S.C. §1051(d)(4); 37 C.F.R. §2.89.
The first six-month extension may be requested without a showing of good cause. Up to four additional six-month extensions may be requested; each must include a showing of good cause. 37 C.F.R. §2.89(c); see 15 U.S.C. §1051(d)(2). Thus, the total time available for filing the statement of use may not be extended beyond thirty-six months from the issuance date of the notice of allowance. See 15 U.S.C. §1051(d).
Applicants must file extension requests through the Trademark Electronic Application System (TEAS) at https://teas.uspto.gov, unless an exception to the requirement to file electronically applies.See 37 C.F.R. §2.23(a); TMEP §301.01. See TMEP §301.02 regarding the limited exceptions for paper submissions. Extension requests are processed by the ITU/Divisional Unit of the USPTO.
Under 15 U.S.C. §1051(d), the applicant must file an extension request within six months of the issuance date of the notice of allowance, or before the expiration of a previously granted extension; otherwise the application is abandoned. 15 U.S.C. §1051(d)(4); 37 C.F.R. §§2.65(c), 2.88(k), 2.89(a)–(b).
Extensions of time are granted in six-month increments. 37 C.F.R. §2.89(a)-(c). Only one extension request may be filed in each six-month extension period that has been granted. See id. The first extension request must be filed within six months of the date the notice of allowance issued. 37 C.F.R. §2.89(a). The second and subsequent extension requests must be filed before the expiration of the previously granted extension period. 37 C.F.R. §2.89(b). The total time available for filing the statement of use may not be extended beyond thirty-six months from the issue date of the notice of allowance. 15 U.S.C. §1051(d)(1)-(2); 37 C.F.R. §2.89(e)(1). If a statement of use is not filed by the end of thirty-six months, the application will be abandoned and cannot be revived. See 37 C.F.R. §2.88(k).
One extension request may be filed with or after a statement of use is filed (sometimes called an "insurance" extension request), if there is time remaining in the existing six-month period during which the statement of use was filed. 37 C.F.R. §2.89(e). Granting the extension request may not extend the time for filing the statement of use more than thirty-six months beyond the issuance of the notice of allowance. 37 C.F.R. §2.89(e)(1). See TMEP §1108.03 regarding filing an "insurance" extension request.
An applicant will receive the full benefit of each extension period before a subsequent extension period will begin to run. The six-month period following the issuance of the notice of allowance, or any subsequent six-month extension period, will not be cut short by the grant of an extension request. No extension will be granted for more than six months. 37 C.F.R. §2.89(a), (c).
Example: The following table presents an example of the complete timeline for filing five extension requests that meet the requirements of 15 U.S.C. §1051(d) and 37 C.F.R. §2.89.
| Document | Issue/Filing Date | Period Covered |
|---|---|---|
| Notice of allowance | Issued June 7, 2010 | Through December 7, 2010 (1st 6 months provided by statute) |
| First extension request | File from June 8, 2010 through December 7, 2010 | Through June 7, 2011 |
| Second extension request | File from December 8, 2010 through June 7, 2011 | Through December 7, 2011 |
| Third extension request | File from June 8, 2011 through December 7, 2011 | Through June 7, 2012 |
| Fourth extension request | File from December 8, 2011 through June 7, 2012 | Through December 7, 2012 |
| Fifth and last extension request | File from June 8, 2012 through December 7, 2012 | Through June 7, 2013 |
| Statement of use | File from December 7, 2012 through June 7, 2013 | N/A |
The USPTO will notify the applicant of the grant or denial of an extension request, and of the reasons for a denial.37 C.F.R. §2.89(g). However, failure to notify the applicant of the grant or denial of an extension request before the expiration of the requested extension does not relieve the applicant of the duty to file a statement of use or further extension request. Id.
Under 37 C.F.R. §2.195(a), an extension request filed through TEAS is considered to have been filed on the date the USPTO receives the transmission (Eastern Time), regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. TMEP §303.01. When an extension request is filed electronically, TEAS almost immediately displays a "Success" page that confirms receipt. TMEP §301.01(a) This page is evidence of filing should any question arise as to the filing date of the extension request, and it may be printed or copied-and-pasted into an electronic record for storage. TEAS also separately sends an email acknowledgement of receipt, which includes a summary of the filed information. Id.
Permitted paper filing. A permitted paper extension request (see TMEP §301.02), is considered timely if it is received in the USPTO by the due date or mailed by the due date in accordance with 37 C.F.R. §2.197 (certificate of mailing) or 37 C.F.R. §2.198 (Priority Mail Express®). See TMEP §§305.02–305.02(h) regarding certificate of mailing procedures and §§305.03–305.03(e) regarding Priority Mail Express®.
First Extension Request
The first request for an extension of time to file a statement of use must include: (1) a written extension request from the applicant, before expiration of the six-month period following issuance of the notice of allowance; (2) the prescribed fee for each class; and (3) a verification or declaration properly signed (see TMEP §611.03(a) regarding who may sign a verification) and stating that, for a trademark or service mark, the applicant has a continued bona fide intention to use the mark in commerce, for a collective or certification mark, the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, and specify the relevant goods/services/collective membership organization identified in the notice of allowance. 37 C.F.R. §2.89(a).
Second and Subsequent Extension Requests
A second or subsequent extension request must be submitted before expiration of a previously granted extension of time and must include: (1) a written extension request from the applicant; (2) the prescribed fee for each class; (3) a verification or declaration properly signed (see TMEP §611.03(a) regarding who may sign a verification) and stating that, for a trademark or service mark, the applicant has a continued bona fide intention to use the mark in commerce, for a collective or certification mark, the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, and specify the relevant goods/services/collective membership organization identified in the notice of allowance; and (4) a showing of good cause, as required by 37 C.F.R. §2.89(d). 37 C.F.R. §2.89(b). Extensions of time under 37 C.F.R. §2.89(b) (i.e., second and subsequent extension requests) are granted in six-month increments and may not aggregate more than 24 months. 37 C.F.R. §2.89(c).
The party filing the extension request must be the owner of the application, i.e., the person or entity who is entitled to use or exercise legitimate control over the use of the mark, at the time of filing. See 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.89(a)(3), (b)(3). If the party filing the extension request is not the owner of record, the request should include either a statement that the assignment or other document of title is recorded (or filed for recordation) in the Assignment Recordation Branch of the USPTO, or other evidence that the party filing the extension request is the owner of the application in accordance with 37 C.F.R. §3.71(d) and §3.73(b). (Note: An application under §1(b) cannot be assigned before the applicant files an allegation of use, except to a successor to the applicant’s business, or portion of the business to which the mark pertains. See TMEP §501.01(a).)
If the extension request is filed by someone other than the owner of record and does not include the necessary evidence of ownership, the ITU staff will issue an Office action denying the request. If the party who filed the extension request was the owner at the time of filing, the applicant may submit evidence to establish the chain of title after expiration of the statutory filing period, within the time provided in the Office action advising the applicant of the denial.
To establish ownership, the new owner must either: (1) record an assignment or other document of title with the Assignment Recordation Branch, and state in the response to the Office action that the document has been recorded; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another or an explanation, supported by an affidavit or declaration under 37 C.F.R. §2.20 that a valid transfer of legal title has occurred. 37 C.F.R. §3.73(b)(1); TMEP §502.01. The USPTO recommends that requests to record documents with the Assignment Recordation Branch be filed through Electronic Trademark Assignment System (ETAS) at https://etas.uspto.gov.
If an extension request is filed by the owner, but there is a minor error in the manner in which the name of the owner is set out, the mistake may be corrected by amendment. See TMEP §1201.02(c) for examples of correctable and non-correctable errors.
If the party who filed the extension request was not the owner at the time of filing, the true owner may not file a substitute extension request unless there is time remaining in the statutory period for filing the extension request. Cf. In re Colombo Inc., 33 USPQ2d 1530, 1531 (Comm’r Pats. 1994) (indicating that a statement of use filed by the wrong party cannot be corrected with a properly signed verification unless it is submitted within the statutory period for filing the statement of use). See TMEP §1108.05 for applicant's recourse if an extension request is denied.
If the applicant notifies the ITU/Divisional Unit during the processing of an extension request that an assignment or other document of title has been recorded, and there is a clear chain of title, the ITU staff will update the owner of record in the Trademark database. See 37 C.F.R. §3.85 and TMEP §502.02(a) regarding the issuance of a registration certificate in the name of a new owner, and §504 regarding the circumstances in which the "Ownership" field in the Trademark database will be automatically updated after recordation of a document with the Assignment Recordation Branch, even if the new owner does not notify the Trademark Operation that the document has been recorded.
The verification must be properly signed. See 37 C.F.R. §2.89(a)(3),(b)(3). See 37 C.F.R. §2.193(e)(1) and TMEP §611.03(a) regarding who may sign a verification. If the extension request is unsigned or signed by the wrong party, a properly signed substitute verification must be submitted before the expiration of the deadline for filing the statement of use. 37 C.F.R. §§2.89(a)(3), (b)(3).
If the extension request is not filed within a reasonable time after its execution, the USPTO may require a substitute verification or declaration under 37 C.F.R. §2.20 that the applicant has a continued bona fide intention to use the mark in commerce, for a trademark or service mark, or that the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, for a collective or certification mark. 37 C.F.R. §2.89(h); see TMEP §804.03 (defining a "reasonable time" for filing after execution of documents submitted in a Section 1 application).
See TMEP §§611-611.06(h) regarding signature on correspondence filed with the USPTO.
A filing fee sufficient to cover at least one class must be submitted within the statutory time for filing the extension request, or the request will be denied. 37 C.F.R. §2.89(a)(2), (b)(2). In a multiple-class application, if the applicant files a fee sufficient to pay for at least one class, but insufficient to cover all the classes, the ITU staff will issue a notice of fee deficiency allowing the applicant thirty days to remit the amount by which the fee is deficient or specify the class(es) to be abandoned. If the USPTO does not receive a timely response to a fee deficiency letter, the USPTO will apply the fees paid beginning with the lowest-numbered class(es) in ascending order, and will delete from the application the remaining class(es) not covered by the submitted fees. 37 C.F.R. §2.89(a)(2), (b)(2).
If the filing fee for at least a single class is omitted or is deficient (e.g., if the fee is charged to a deposit account with insufficient funds, an EFT or credit card payment is refused or charged back by a financial institution, or a check is returned unpaid for a permitted paper filing (see TMEP §301.02), the fee for at least one class must be submitted before the expiration of the statutory filing period. See 37 C.F.R. §2.89(a)(2), (b)(2). If the extension request was not accompanied by an authorization to charge deficient fee(s) to a deposit account (37 C.F.R. §2.208) that has sufficient funds to cover the fee, and the applicant does not resubmit the fee before expiration of the statutory deadline, the extension request will be denied and the application will be abandoned. See 37 C.F.R. §2.89(a)(2), (b)(2). In addition, when an EFT or credit card is refused or charged back or a check is returned unpaid for a permitted paper filing, the applicant must pay the processing fee required by 37 C.F.R. §2.6(b)(10). See TMEP §405.06 regarding payments that are refused or charged back.
